MPEP 215.02(b)
Timeliness Requirement – Met By Interim Copy of Foreign Application

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

Previous: §215.02(a) | Next: §215.03

215.02(b)    Timeliness Requirement – Met By Interim Copy of Foreign Application [R-07.2015]

I.    TRUE COPY OF FOREIGN APPLICATION AS FILED

37 C.F.R. 1.55  Claim for foreign priority.

*****

  • (j) Interim copy. The requirement in paragraph (f) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
    • (1) A copy of the original foreign application clearly labeled as "Interim Copy," including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority);
    • (2) The copy of the foreign application and separate cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or with a petition under paragraph (e) or (f) of this section; and
    • (3) A certified copy of the foreign application is filed within the period specified in paragraph (g)(1) of this section.

*****

37 CFR 1.55(j) permits an applicant to provide an ‘‘interim copy’’ of the original foreign application from the applicant’s own records to provide for the situation in which the applicant cannot obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f), although there is no requirement that an applicant be unable to obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f) to use 37 CFR 1.55(j). The requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f) will be considered satisfied if the applicant files a copy of the original foreign application clearly labeled as ‘‘Interim Copy,’’ including the specification, and any drawings or claims upon which it is based with the time period specified in 37 CFR 1.55(j). 37 CFR 1.55(j) also provides that the interim copy of the foreign application must be filed together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority). 37 CFR 1.55(i) also provides that the interim copy of the foreign application and cover sheet must be filed within the later of sixteen months from the filing date of the prior foreign application or four months from the actual filing date of an application under 35 U.S.C. 111(a), within four months from the later of the date of commencement (37 CFR 1.491(a) ) or the date of the initial submission under 35 U.S.C. 371 in an application entering the national stage under 35 U.S.C. 371, or with a petition under 37 CFR 1.55(e) or (f). 37 CFR 1.55(j) finally provides that a certified copy of the foreign application ultimately must be filed within the period specified in 37 CFR 1.55(g)(1). Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.

An interim copy of a foreign priority application will be entered into the file wrapper of the application in which it was filed and labeled as "Interim copy of Foreign Priority Document."

II.    FILING INTERIM COPY VIA EFS-WEB

If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, Sequence Listing or Computer Program Listings, along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF file via EFS-Web. The PDF file will be stored in the Image File Wrapper of the application, and applicants must select the document description "Interim Copy of the Foreign Priority Application" to index this document when filing online.

Application parts that were filed in a foreign patent office only as plain text computer files (e.g. TXT file), such as a Sequence Listing, lengthy Tables(s), or Computer Program Listing appendix, may be filed as a TXT file via EFS-Web (or on compact disc). When filing online via EFS-Web, applicants must select the document description "Interim Copy of the Foreign Priority (text file)" to index a plain text file part of the application. See MPEP § 502.05 for additional information regarding filing documents via EFS-Web.